Ex parte Muller

Board of Patent Appeals and Interferences

Feb 6, 2001

08451796 (B.P.A.I. Feb. 6, 2001)

1
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte SHIMON MULLER
_____________
Appeal No. 1998-2709
Application No. 08/451,796
______________
ON BRIEF
_______________
Before THOMAS, JERRY SMITH and LALL, Administrative Patent
Judges
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 5-14 and 19-27.
Claims 1-4 and 15-18 have been indicated by the examiner to
contain allowable subject matter.
The disclosed invention pertains to a random number
generator for use in a condition reduction protocol on a
Appeal No. 1998-2709
Application No. 08/451,796
2
computer network. More particularly, the random number
generator of the
invention generates first and second random numbers using two
different types of random number generators. The first and
second random numbers are combined to produce a third random
number.
Representative claim 5 is reproduced as follows:
5. A method of generating random numbers,
comprising the steps of:

A) generating a first random number using a
first random number generator of a first type;
B) generating a second random number using a
second random number generator of a second type
different from said first type; and
C) combining said first and second random
numbers to produce a third random number.
The examiner relies on the following reference:
Albers et al. (Albers) 5,153,532 Oct. 06, 1992
Claims 5-14 and 19-27 stand rejected under 35 U.S.C.
§ 103. As evidence of obviousness the examiner offers Albers
Appeal No. 1998-2709
Application No. 08/451,796
The alternative rejection of these claims based on Lee (4,852,023) as1
set forth in the final rejection has been withdrawn in the examiner’s answer.
3
taken alone . 1
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the brief along with the examiner’s
rationale in support of the rejection and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in
the particular art would have suggested to one of ordinary
skill in the art the obviousness of the invention as set forth
in claims 5-14 and 19-27. Accordingly, we affirm.
Appeal No. 1998-2709
Application No. 08/451,796
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Although appellant nominally indicates that independent
claims 5 and 19 stand or fall separately from dependent claims
6-14 and 20-27 [brief, page 2], appellant has presented no
arguments in support of the separate patentability of the
dependent claims. Appellant simply asserts that the dependent
claims are patentable because they are similar to the allowed
claims. Such an assertion does not properly address the
rejection made by the examiner. Since the arguments section
of appellant’s brief only argues independent claims 5 and 19,
and since these two claims are argued together, all the claims
on appeal before us will stand or fall together as a single
group with claim 5 selected as the representative claim for
the entire group. Note In re King, 801 F.2d 1324, 1325, 231
USPQ 136, 137 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989,
991, 217 USPQ 1, 3 (Fed. Cir. 1983).
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
Appeal No. 1998-2709
Application No. 08/451,796
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determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467
(1966), and to provide a reason why one having ordinary skill
in the pertinent art would have been led to modify the prior
art or to combine prior art references to arrive at the
claimed invention. Such reason must stem from some teaching,
suggestion or implication in the prior art as a whole or
knowledge generally
available to one having ordinary skill in the art. Uniroyal,
Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d
1434,
1438 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988); Ashland
Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281,
293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475
U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp.,
732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of
complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). If that burden is met,
Appeal No. 1998-2709
Application No. 08/451,796
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the burden then shifts to the applicant to overcome the prima
facie case with argument and/or evidence. Obviousness is then
determined on the basis of the evidence as a whole and the
relative persuasiveness of the arguments. See Id.; In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir.
1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189
USPQ 143, 147 (CCPA 1976). Only those arguments actually made
by appellant have been considered in this decision. Arguments
which appellant could have made but chose not to make in the
brief have not been considered [see 37 CFR § 1.192(a)].
With respect to representative, independent claim 5, the
examiner notes that Albers teaches a circuit for combining the
outputs of two random number generators designed to produce
different outputs. The examiner finds that the recitation of
first and second types of random number generators would have
been obvious to the artisan in view of the teachings of Albers
[answer, pages 4-5].
Appellant argues that the two random number generators in
Albers are not of different types as required by claim 5.
Appeal No. 1998-2709
Application No. 08/451,796
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Appellant also argues that the circuit in Albers will
eventually result in cyclic repetition [brief, page 4].
With respect to the second argument, we are not persuaded
by this argument. Albers teaches forming a random number by
combining the outputs of two different pseudo-random number
generators. While appellant is correct that the output in
Albers will eventually repeat, we do not agree that this
result is precluded by the language of claim 5. The pseudo-
random numbers generated in Albers are considered to be
“random numbers” within the broad definition of that term as
it is typically used in this art.
We do not agree with appellant’s argument that Albers
teaches away from using two different types of random number
generators. Although the preferred embodiment of Albers uses
two
pseudo-random sequence generators clocked at different
frequencies, the teachings of Albers are not so limited. It
is clear from the disclosure of Albers that the main
requirement of that invention is that the outputs from the two
random number generators must be different. This provides an
Appeal No. 1998-2709
Application No. 08/451,796
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improved random number because a first random number is
modulated by a second random number [column 4, lines 28-40].
Thus, the key teaching in Albers is that the two random number
generators must produce different outputs.
Albers also teaches that the random number generators can
be constructed in various other ways to perform the intended
function [column 5, lines 21-24]. Thus, the particular type
of random number generator is not critical in Albers. The
artisan would have appreciated from the teachings of Albers
that the two random number generators could be of different
types as long as they produced the requisite different
outputs. Therefore, we
find that the broad recitation of first and second types of
random number generators as set forth in claim 5 would have
been obvious within the meaning of 35 U.S.C. § 103 in view of
the teachings of Albers.
In summary, we have sustained the examiner’s rejection of
claims 5-14 and 19-27 which stand or fall together as a single
group. Accordingly, the decision of the examiner rejecting
Appeal No. 1998-2709
Application No. 08/451,796
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claims 5-14 and 19-27 is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
js/vsh
Appeal No. 1998-2709
Application No. 08/451,796
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JAMES D. IVEY
LAW OFFICES OF JAMES D. IVEY
3025 TOTTERDELL STREET
OAKLAND, CA 94611-1742